IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Marcus Da Silva et al.
`U.S. Patent No.:
`10,715,235
` Attorney Docket No.: 50095-0047IP1
`Issue Date:
`July 14, 2020
`Appl. Serial No.: 15/495,539
`Filing Date:
`April 24, 2017
`Title:
`DIRECTED WIRELESS COMMUNICATION
`
`DECLARATION OF DR. ROBERT AKL
`
`I declare that all statements made herein on my own knowledge are true and
`
`that all statements made on information and belief are believed to be true, and
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`further, that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`By: __________________________
`
`Robert Akl, D.Sc.
`
` January 7, 2022
`
`
`Date: __________________________
`
`
`
`1
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`

`

` 
`
`Table of Contents
`INTRODUCTION ........................................................................................... 5 
`I. 
`QUALIFICATIONS AND BACKGROUND INFORMATION .................... 6 
`II. 
`III.  MATERIALS RELIED UPON ..................................................................... 12 
`IV.  OVERVIEW OF CONCLUSIONS FORMED ............................................. 14 
`V. 
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 14 
`VI.  LEGAL STANDARDS ................................................................................. 16 
`Terminology ........................................................................................ 16 
` 
`Legal Standards ................................................................................... 16 
`1. 
`Anticipation ............................................................................... 17 
`2.   Obviousness .............................................................................. 17 
`VII.  THE ’235 PATENT ....................................................................................... 21 
`  Overview of the ’235 Patent ................................................................ 21 
`Relevant History of the ’235 Patent .................................................... 27 
` 
`1. 
`Applicant’s Arguments During Prosecution ............................. 27 
`2.   Applicant Failed to Establish a February 2002 Invention
`Date ........................................................................................... 28 
`The Effective Filing Date is After November 4, 2002 ............. 30 
`3.  
`VIII.  OVERVIEW AND COMBINATIONS OF PRIOR ART
`REFERENCES .............................................................................................. 35 
`Burke ................................................................................................... 35 
` 
`Shull ..................................................................................................... 40 
`Combination of Burke and Shull ......................................................... 42 
` 
`IX.  MANNER IN WHICH THE PRIOR ART REFERENCES RENDER
`THE ’235 CLAIMS UNPATENTABLE ...................................................... 44 
`Claim 8 ................................................................................................ 44 
` 
`[8pre] A method in a wireless communications system, the
`method comprising: ..................................................................... 44 
`[8a] receiving a first signal transmission from a remote station
`via a first antenna element of an antenna and a second
`
` 
`
`2
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`

`

`signal transmission from the remote station via a second
`antenna element of the antenna simultaneously, ........................ 45 
`[8b] wherein the first signal transmission and the second signal
`transmission comprise electromagnetic signals comprising
`one or more transmission peaks and one or more
`transmission nulls; ....................................................................... 48 
`[8c] determining first signal information for the first signal
`transmission; and [8d] determining second signal
`information for the second signal transmission, wherein
`the second signal information is different than the first
`signal information; ...................................................................... 51 
`[8e] determining a set of weighting values based on the first
`signal information and the second signal information,
`wherein the set of weighting values is configured to be
`used by the remote station to construct one or more beam-
`formed transmission signals; and ................................................ 59 
`[8f] transmitting to the remote station a third signal comprising
`content based on the set of weighting values. ............................. 61 
`Claim 9 ................................................................................................ 62 
`[9] The method as recited in claim 8, further comprising:
`transmitting the third signal to the remote station via the
`antenna. ....................................................................................... 62 
`Claim 10 .............................................................................................. 62 
`[10] The method as recited in claim 8, wherein the first signal
`transmission and the second signal transmission are
`directional transmissions. ............................................................ 62 
`Claim 11 .............................................................................................. 64 
`[11] The method as recited in claim 8, wherein the set of
`weighting values is further based on one or more of: a
`transmit power level, a data transmit rate, an antenna
`direction, quality of service data, or timing data. ....................... 64 
`Claim 12 .............................................................................................. 65 
`[12] The method as recited in claim 11, wherein the content
`comprises data configured to be used by the remote station
`to modify the placement of one or more transmission
`
` 
`
` 
`
` 
`
` 
`
`3
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`

`

` 
`
`peaks and one or more transmission nulls in a subsequent
`signal transmission. ..................................................................... 65 
`Claim 13 .............................................................................................. 66 
`[13a] The method as recited in claim 12, further comprising:
`determining a plurality of signal strength indications for
`the first signal transmission; ....................................................... 66 
`[13b] determining a first signal strength average based on the
`plurality of signal strength indications for the first signal
`transmission; ............................................................................... 69 
`[13c] determining a plurality of signal strength indications for
`the second signal transmission; and [13d] determining a
`second signal strength average based on the plurality of
`signal strength indications for the second signal
`transmission; and ......................................................................... 69 
`[13e] generating a fourth signal based on the first signal
`strength average and the second signal strength average. .......... 70 
`Claim 14 .............................................................................................. 72 
`[14] The method as recited in claim 13, further comprising:
`causing the transceiver to transmit the fourth signal to the
`remote station via the antenna. .................................................... 72 
`CONCLUSION .............................................................................................. 72 
`
`
` 
`
`X. 
`
`
`
`
`
`4
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`I.
`INTRODUCTION
`1. My name is Robert Akl. I have been retained by counsel as an expert
`
`witness to provide assistance regarding U.S. Patent No. 10,715,235 (“the ’235
`
`Patent”). It is my understanding that Apple Inc. and HP Inc. (collectively
`
`“Petitioners”) are submitting an IPR petition challenging certain claims of the ’235
`
`Patent. Specifically, I have been asked to review claims 8-14 of the ’235 Patent (the
`
`“Challenged Claims”) in view of prior art references, and the understanding of a
`
`person of ordinary skill in the art (“POSITA”) as it relates to the ’235 Patent. I have
`
`personal knowledge of the facts and opinions set forth in this declaration and believe
`
`them to be true. If called upon to do so, I would testify competently thereto.
`
`2.
`
`I am being compensated for my time at my standard consulting rate. I
`
`am also being reimbursed for expenses that I incur during the course of this work.
`
`My compensation is not contingent upon the results of my study, the substance of
`
`my opinions, or the outcome of any proceeding involving the challenged claims. I
`
`have no financial interest in the outcome of this matter or on the pending litigation
`
`between Petitioner and Patent Owner.
`
`3.
`
`In writing this declaration, I have considered the following: my own
`
`knowledge and experience, including my work experience in the fields of wireless
`
`communications and electrical engineering; my experience in teaching those
`
`subjects; and my experience in working with others involved in those fields. In
`
`5
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`

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`addition, I have analyzed various publications and materials, in addition to other
`
`materials I cite in my declaration.
`
`4. My opinions, as explained below, are based on my education,
`
`experience, and expertise in the fields relating to the ’235 Patent. Unless otherwise
`
`stated, my testimony below refers to the knowledge of a POSITA as of the earliest
`
`priority date of the ’235 Patent, or before. Any figures that appear within this
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`document have been prepared with the assistance of Counsel and reflect my
`
`understanding of the ’235 Patent, and the prior art discussed below.
`
`5. My analysis of the materials produced in this proceeding is ongoing and
`
`I will continue to review any new material as it is provided. This declaration
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information and
`
`on my continuing analysis of the materials already provided.
`
`II. QUALIFICATIONS AND BACKGROUND INFORMATION
`6.
`I am an expert in the field of wireless communication systems. I have
`
`studied, taught, practiced, and researched this field for over 25 years. I have
`
`summarized in this section my educational background, work experience, and other
`
`relevant qualifications. Attached hereto as Appendix A, is a true and correct copy
`
`of my curriculum vitae describing my background and experience.
`
`6
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`

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`7.
`
`I earned my Bachelor of Science degrees in Electrical Engineering and
`
`Computer Science summa cum laude with a grade point average of 4.0/4.0 and a
`
`ranking of first in my undergraduate class from Washington University in St. Louis
`
`in 1994. In 1996, I earned my Master of Science degree in Electrical Engineering
`
`from Washington University in St. Louis with a grade point average of 4.0/4.0. I
`
`earned my Doctor of Science in Electrical Engineering from Washington University
`
`in St. Louis in 2000, again with a grade point average of 4.0/4.0, with my dissertation
`
`being on “Cell Design to Maximize Capacity in Cellular Code Division Multiple
`
`Access (CDMA) Networks.”
`
`8. While a graduate student, from 1996 through 2000, I worked at
`
`MinMax Corporation in St. Louis, where I designed software packages that provided
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`tools to flexibly allocate capacity in a CDMA communications network and
`
`maximize the number of subscribers. I also analyzed and simulated different audio
`
`compression schemes. I also validated the hardware architecture for an
`
`Asynchronous Transfer Mode (ATM) switch capable of channel group switching, as
`
`well as performed logical and timing simulations, and developed the hardware
`
`architecture for the ATM switch. I also worked with Teleware Corporation in Seoul,
`
`South Korea, where I designed and developed algorithms that were commercially
`
`deployed in a software package suite for analyzing the capacity in a CDMA network
`
`implementing the IS-95 standard to maximize the number of subscribers.
`
`7
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`9.
`
`After obtaining my Doctor of Science degree, I worked as a Senior
`
`Systems Engineer at Comspace Corporation from October of 2000 to December of
`
`2001. At Comspace, I designed and developed advanced data coding and
`
`modulation methods for improving the reliability and increasing the available data
`
`rates for cellular communications. I coded and simulated different encoding
`
`schemes (including Turbo coding, Viterbi decoding, trellis coded modulation, and
`
`Reed-Muller codes) and modulation techniques using amplitude and phase
`
`characteristics and multi-level star constellations. This work further entailed the
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`optimization of soft decision parameters and interleavers for additive white Gaussian
`
`and Rayleigh faded channels. In addition, I also extended the control and trunking
`
`of Logic Trunked Radio (LTR) to include one-to-one and one-to-many voice and
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`data messaging.
`
`10.
`
`In January of 2002, I joined the faculty of the University of New
`
`Orleans in Louisiana as an Assistant Professor in the Department of Electrical
`
`Engineering. While in this position, I designed and taught two new courses called
`
`“Computer Systems Design I and II.” I also developed a Computer Engineering
`
`Curriculum with a strong hardware-design emphasis, formed a wireless research
`
`group, and advised graduate and undergraduate students.
`
`11.
`
`In September of 2002, I received an appointment as an Assistant
`
`Professor in the Department of Computer Science and Engineering at the University
`
`8
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`of North Texas (UNT), in Denton, Texas. In May of 2008, I became a tenured
`
`Associate Professor in the Department of Computer Science and Engineering. As a
`
`faculty member, I have taught courses and directed research in networking and
`
`telecommunications, including 2G, 3G, 4G, 5G, CDMA/WCDMA, GPS, GSM,
`
`UMTS, LTE, ad-hoc networks, antenna design and beamforming, Bluetooth, call
`
`admission control, channel coding, communication interfaces and standards,
`
`compression, computer architecture, MIMO systems, multi-cell network
`
`optimization, network security, packet-networks, telephony, VoIP, Wi-Fi (802.11),
`
`802.15.4, Zigbee, wireless communication, and wireless sensors. I am also the
`
`director of the Wireless Sensor Lab (“WiSL”) at UNT. I am a member of the Center
`
`for Information and Cyber Security (CICS). It is the only program in the U.S. to be
`
`federally certified by the National Security Agency as a Center of Academic
`
`Excellence in Information Assurance Education and Research and Cyber Defense
`
`Research. I am also a member of the NSF Net-Centric & Cloud Software &
`
`Systems: Industry-University Cooperative Research Center (I/UCRC). Several of
`
`my research projects are funded by industry. In January of 2015, I was promoted to
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`Associate Chair of Graduate Studies in the Department of Computer Science and
`
`Engineering.
`
`12.
`
`In addition to advising and mentoring students at UNT, I was asked to
`
`join the faculty of the University of Arkansas in Little Rock as an Adjunct Assistant
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`9
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`Professor from 2004 to 2008 in order to supervise the research of two Ph.D. graduate
`
`students who were doing research in wireless communications. At UNT, I have
`
`advised and supervised more than 250 undergraduate and graduate students, several
`
`of whom received a master’s or doctorate degree under my guidance.
`
`13. Further, since 2005, I have received over a million dollars in funding
`
`from the State of Texas, Texas Higher Education Coordination Board, the National
`
`Science Foundation, and industry to design and conduct robotics, video, and mobile
`
`gaming (e.g., Xbox, PC, mobile device) programming summer camps for middle
`
`and high school students at UNT. By using video and mobile gaming as the
`
`backdrop, participants have learned coding and programming principles and
`
`developed an understanding of the role of physics and mathematics in video game
`
`design.
`
`14.
`
`In addition to my academic work, I have remained active in the
`
`communication industry through my consulting work. In 2002, I consulted for
`
`Input/Output Inc. and designed and implemented algorithms for optimizing the
`
`frequency selection process used by sonar for scanning the bottom of the ocean. In
`
`2004, I worked with Allegiant Integrated Solutions in Ft. Worth, Texas, to design
`
`and develop an integrated set of tools for fast deployment of wireless networks, using
`
`the 802.11 standard. Among other features, these tools optimize the placement of
`
`Access Points and determine their respective channel allocations to minimize
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`10
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`interference and maximize capacity. I also assisted the Collin County Sheriff’s
`
`Office (Texas) in a double homicide investigation, analyzing cellular record data to
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`determine user location.
`
`15.
`
`I have authored and co-authored over 90 journal publications,
`
`conference proceedings, technical papers, book chapters, and technical presentations
`
`in a broad array of communications-related technologies, including networking and
`
`wireless communication. I have also developed and taught over 100 courses related
`
`to communications and computer systems, including several courses on signals and
`
`systems, 4G/LTE and 5G/NR, OFDM, VoIP, Wi-Fi (802.11), 802.15.4, Zigbee,
`
`wireless communication, antenna design and beamforming, communications
`
`systems, communication interfaces and standards, sensor networks, source coding
`
`and compression, network security, computer systems design, game and app design,
`
`and computer architecture. These courses have included introductory courses on
`
`communication networks and signals and systems, as well as more advanced courses
`
`on wireless communications. A complete list of my publications and the courses I
`
`have developed and/or taught is also contained in my curriculum vitae.
`
`16. My professional affiliations include services in various professional
`
`organizations and serving as a reviewer for a number of technical publications,
`
`journals, and conferences. I have also received a number of awards and recognitions,
`
`including the IEEE Professionalism Award (2008), UNT College of Engineering
`
`11
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`Outstanding Teacher Award (2008), and Tech Titan of the Future (2010) among
`
`others, which are listed in my curriculum vitae.
`
`17.
`
`I have also served as an expert in certain legal proceedings. A list of
`
`cases in which I have testified at trial, hearing, or by deposition (including those
`
`during the past five years) is provided in my curriculum vitae. Over the years, I have
`
`been retained by both patent owners and petitioners.
`
`III. MATERIALS RELIED UPON
`18.
`I have reviewed the ’235 Patent (EX-1001) and relevant excerpts of the
`
`prosecution history of the ’235 Patent (EX-1002). I have also reviewed the
`
`following references:
`
`Prior Art References
`
`U.S. Patent No. 7,155,231 (“Burke” or EX-1006)
`
`U.S. Patent No. 6,006,077 (“Shull” or EX-1007)
`
`U.S. Patent Application Publication No. 2002/0158801 (“Crilly”
`
`or EX-1008)
`
`U.S. Provisional Application No. 62/423,660 (“’660 Provisional
`
`Application” or EX-1009)
`
`U.S. Patent No. 6,879,823 (“Raaf” or EX-1010)
`
`PCT Application Publication No. WO 02/47286 (“Hottinen” or
`
`EX-1011)
`
`12
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`

`

`U.S. Patent No. 6,662,024 (“Walton” or EX-1012)
`
`U.S. Patent No. 6,208,863 (“Salonaho” or EX-1013)
`
`U.S. Patent Application Publication No. 20020080862 (“Ali” or
`
`EX-1014)
`
`U.S. Patent No. 7,340,017 (“Banerjee” or EX-1015)
`
`U.S. Patent No. 6,792,031 (“Sriram” or EX-1016)
`
`Andrea Goldsmith, Wireless Communications, Cambridge
`
`University Press, 2005 (“Goldsmith” or EX-1017)
`
`U.S. Patent No. 6,661,832 (“Sindhushayana” or EX-1019)
`
`
`
`19.
`
`I have also reviewed various supporting references and other
`
`documentation as further noted in my opinions below.
`
`20. Counsel (Fish & Richardson) has informed me that I should consider
`
`these materials through the lens of a POSITA related to the ’235 Patent at the time
`
`of the earliest priority date of the ’235 Patent, and I have done so during my review
`
`of these materials. The ’235 Patent was filed on April 24, 2017 (“the ’235 Patent
`
`Filing Date”). EX-1001, cover. The ’235 Patent is a part of a family of patent
`
`applications claiming priority to U.S. Patent Apl. No. 13/855,410, filed on April 2,
`
`2013 and now issued as U.S. Patent No. 9,462,589. Id., 2. Apl. No. 13/855,410 is
`
`a divisional of U.S. Patent Apl. No. 10/700,329, filed on November 3, 2003, which
`
`further claims priority from U.S. Provisional Patent Apl. No. 60/423,660, filed on
`
`13
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`

`

`November 4, 2002. Id. Counsel has indicated that I should use November 3, 2003
`
`as the earliest priority date of the ’235 Patent.1 I have therefore used November 3,
`
`2003 as the date for my analysis below and the date for determining a POSITA.
`
`Even if the November 4, 2002 date were to be used, my opinions as to the
`
`obviousness of the claims would not change.
`
`21.
`
`In the cited references, all emphasis is added unless otherwise noted.
`
`IV. OVERVIEW OF CONCLUSIONS FORMED
`22. This declaration explains the conclusions that I have formed based on
`
`my analysis. I have summarized my conclusions below:
`
` Claims 8-12 are obvious over Burke; and
`
` Claims 13 and 14 are obvious over Burke in view of Shull.
`
`23.
`
`In support of these conclusions, I provide an overview of the references
`
`in Section VIII and more detailed comments regarding the obviousness of claims 8-
`
`14 (“the Challenged Claims”) of the ’235 Patent in Section IX.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`24.
`In rendering the opinions set forth in this declaration, I was asked to
`
`consider the patent claims and the prior art through the eyes of a POSITA at the time
`
`
`
`1 As I explain below in Section VII.B, Apl. No. 60/423,660 does not support the
`
`Challenged Claims.
`
`14
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`of the alleged invention, which I understand is asserted to be the earliest priority date
`
`(November 3, 2003) of the ’235 Patent. I understand that the factors considered in
`
`determining the ordinary level of skill in a field of art include the level of education
`
`and experience of persons working in the field; the types of problems encountered
`
`in the field; the teachings of the prior art, and the sophistication of the technology at
`
`the time of the alleged invention. I understand that a POSITA is not a specific real
`
`individual, but rather is a hypothetical individual having the qualities reflected by
`
`the factors above. I understand that a POSITA would also have knowledge from the
`
`teachings of the prior art, including the art cited below.
`
`25. Taking these factors into consideration, on or before November 3, 2003,
`
`a POSITA of the ’235 Patent would have had a Bachelor’s degree in electrical
`
`engineering or a related field, in combination with training or at least two years of
`
`related work experience in wireless communication systems, or the equivalent.
`
`Alternatively, the person could have also had a Master’s or Doctorate degree in
`
`electrical engineering with a year of related work experience in wireless
`
`communication systems.
`
`26. Before November 3, 2003, my level of skill in the art was at least that
`
`of a POSITA. I am qualified to provide opinions concerning what a POSITA would
`
`have known and understood at that time, and my analysis and conclusions herein are
`
`from the perspective of a POSITA as of that date.
`
`15
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`

`VI. LEGAL STANDARDS
` Terminology
`27.
`I have been informed by Counsel and understand that the best indicator
`
`of claim meaning is its usage in the context of the patent specification as understood
`
`by a POSITA. I further understand that the words of the claims should be given their
`
`plain meaning unless that meaning is inconsistent with the patent specification or the
`
`patent’s history of examination before the Patent Office. Counsel has also informed
`
`me, and I understand that, the words of the claims should be interpreted as they
`
`would have been interpreted by a POSITA at the time of the invention was made
`
`(not today). I have been informed by Counsel that I should use ’235 Patent Filing
`
`Date as the point in time for claim interpretation purposes with respect to this
`
`declaration.
`
`
`28.
`
`Legal Standards
`I have been informed by Counsel and understand that documents and
`
`materials that qualify as prior art can render a patent claim unpatentable as being
`
`anticipated or obvious.
`
`29.
`
`I am informed by Counsel and understand that all prior art references
`
`are to be looked at from the viewpoint of a POSITA at the time of the invention, and
`
`that this viewpoint prevents one from using his or her own insight or hindsight in
`
`deciding whether a claim is anticipated or rendered obvious.
`
`16
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`

`

`Anticipation
`1.
`I understand that patents or printed publications that qualify as prior art
`
`30.
`
`can be used to invalidate a patent claim as anticipated or as obvious.
`
`31.
`
`I understand that, once the claims of a patent have been properly
`
`construed, the second step in determining anticipation of a patent claim requires a
`
`comparison of the properly construed claim language to the prior art on a limitation-
`
`by-limitation basis.
`
`32.
`
`I understand that a prior art reference “anticipates” an asserted claim,
`
`and thus renders the claim invalid, if all limitations of the claim are disclosed in that
`
`prior art reference, either explicitly or inherently (i.e., necessarily present).
`
`2. Obviousness
`I understand that even if a patent is not anticipated, it is still invalid if
`
`33.
`
`the differences between the claimed subject matter and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a POSITA.
`
`34.
`
`I have been informed by Counsel and understand that a claim is
`
`unpatentable for obviousness and that obviousness may be based upon a
`
`combination of prior art references. I am informed by Counsel and understand that
`
`the combination of familiar elements according to known methods is likely to be
`
`obvious when it does no more than yield predictable results. However, I am
`
`17
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`

`informed by Counsel and understand that a patent claim composed of several
`
`elements is not proved obvious merely by demonstrating that each of its elements
`
`was, independently, known in the prior art.
`
`35.
`
`I am informed by Counsel and understand that when a patented
`
`invention is a combination of known elements, a court determines whether there was
`
`an apparent reason to combine the known elements in the fashion claimed by the
`
`patent at issue by considering the teachings of prior art references, the effects of
`
`demands known to people working in the field or present in the marketplace, and the
`
`background knowledge possessed by a POSITA.
`
`36.
`
`I am informed by Counsel and understand that a patent claim composed
`
`of several limitations is not proved obvious merely by demonstrating that each of its
`
`limitations was independently known in the prior art. I am informed by Counsel and
`
`understand that identifying a reason those elements would be combined can be
`
`important because inventions in many instances rely upon building blocks long since
`
`uncovered, and claimed discoveries almost of necessity will be combinations of
`
`what, in some sense, is already known. I am informed by Counsel and understand
`
`that it is improper to use hindsight in an obviousness analysis, and that a patent’s
`
`claims should not be used as a “roadmap.”
`
`37.
`
`I am informed by Counsel and understand that an obviousness inquiry
`
`requires consideration of the following factors: (1) the scope and content of the prior
`
`18
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`

`

`art, (2) the differences between the prior art and the claims, (3) the level of ordinary
`
`skill in the art, and (4) any so called “secondary considerations” of non-obviousness,
`
`which include: (i) “long felt need” for the claimed invention, (ii) commercial success
`
`attributable to the claimed invention, (iii) unexpected results of the claimed
`
`invention, and (iv) “copying” of the claimed invention by others.
`
`38.
`
`I have been informed by Counsel and understand that an obviousness
`
`evaluation can be based on a single reference or a combination of multiple prior art
`
`references. I understand that the prior art references themselves may provide a
`
`suggestion, motivation, or reason to combine, but that the nexus linking two or more
`
`prior art references is sometimes simple common sense. I have been informed by
`
`Counsel and understand that obviousness analysis recognizes that market demand,
`
`rather than scientific literature, often drives innovation, and that a motivation to
`
`combine references may be supplied by the direction of the marketplace.
`
`39.
`
`I have been informed by Counsel and understand that if a technique has
`
`been used to improve one device, and a POSITA at the time of invention would have
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`recognized that it would improve similar devices in the same way, using the
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`technique is obvious unless its actual application is beyond his or her skill.
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`40.
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`I have been informed by Counsel and understand that practical and
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`common sense considerations should guide a proper obviousness analysis, because
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`familiar items may have obvious uses beyond their primary purposes. I have been
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`informed by Counsel and understand that a POSITA looking to overcome a problem
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`will often be able to fit together the teachings of multiple prior art references. I have
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`been informed by Counsel and understand that obviousness analysis therefore takes
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`into account the inferences and creative steps that a POSITA would have employed
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`at the time of invention.
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`41.
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`I have been informed by Counsel and understand that a proper
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`obviousness analysis focuses on what was known or obvious to a POSITA at the
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`time of invention, not just the patentee. Accordingly, I understand that any need or
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`problem known in the field of endeavor at the time of invention and addressed by
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`the patent can provide a reason for combining the elements in the manner claimed.
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`42.
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`I have been informed by Counsel and understand that a claim can be
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`obvious in light of a single reference, without the need to combine references, if the
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`elements of the claim that are not found explicitly or inherently in the reference can
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`be supplied by the common sense of a POSITA.
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`43.
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`I have been informed by Counsel and understand that there must be a
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`relationship between any such secondary considerations and the invention, and that
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`contemporaneous and independent invention by others is a secondary consideration
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`supporting an obviousness determination.
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`44.
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`In sum, my understanding is that prior art teachings are properly
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`combined where a POSITA having the understanding and knowledge reflected in
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`the prior art and motivated by the general problem facing the inventor, would have
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`been led to make the combination of elements recited in the claims. Under this
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`analysis, the prior art references themselves, or any need or problem known in the
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`field of endeavor at the time of the invention, can provide a reason for combining
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`the elements of multiple prior art references in the claimed manner.
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`45.
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`I have been informed by Counsel and understand that in an inter partes
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`review (IPR), “the petitioner shall have the burden of proving a proposition of
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`unpatentability,” including a proposition of obviousness, “by a preponderance of the
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`evidence.”
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`VII. THE ’235 PATENT
` Overview of the ’235 Patent
`46. The ’235 Patent discloses “a multi-beam directed signal system [that]
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`coordinates directed wireless communication with [a] client.” EX-1001, 2:7-16.
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`The ’235 Patent’s “directed wireless communication system 200 includes an access
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`station 102 and remote client devices 202 and 204. The access station 102 includes
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`a multi-beam directed signal system 206 coupled to an antenna assembly 208 via a
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`communication link 210.” Id., 4:44-54, FIGS. 2, 3 (reproduced below). “The
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`antenna assembly 208 can be implemented as two or more antennas, and optionally
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`as a phased array of antenna elements, to emanate” a communication beam array of
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`multiple directed communication beams 214(1), 214(2), . . . , 214(N) from antenna
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`array 302, which is part of the antenna assembly 208. Id., 2:24-28, 4:44-5:67.
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`EX-1001, FIGS. 2, 3
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`
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`47. The ’235 Patent teaches that signals received via the antenna array 302
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`are weighted. Id., 24:25-3